DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1,3,4 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7 and 20 of U.S. Patent No. 11718364. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 in the current application is anticipated by claims 1 and 2 of US patent 11718364;
Claims 3,4 and 6 in the current application are anticipated by claims 6,7 and 20 of US Patent 11718364.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1 and 9 introduce 2 biasing members, however, the drawings only show one; examiner believes that “a biasing member” in line 9 of both claims should be changed to “the biasing member”. Note that for each claim 1 and 9, an instance of “a biasing member” was already introduced in line 3.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6,9-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang (US 5529328). Regarding Claim 1, Chang teaches: a suspension member for a vehicle wheel (see figure 4), comprising:
an elongated housing (11),
a biasing member (20),
an elongated member (10) that slidably engages the elongated housing (see figure 5), the elongated member comprising a first plurality of rollers (12) positioned on the elongated member and a second plurality of rollers (12) positioned on the elongated member wherein the first plurality of rollers engage a first side of the elongated housing (see figure 1) and the second plurality of rollers engage a second side of the elongated housing (see figures 1 and 3), wherein rollers of the first plurality of rollers and rollers of the second plurality of rollers are alternately staggered (see figure 3 as the rollers when mounted and the vehicle is ready for use are staggered in relation to each other), and further comprising the biasing member, wherein the elongated housing is urged away from the elongated member by the biasing member (see Col. 2, lines 30-42 as the elongated housing 11, the biasing member 20 and the elongated member 10 are all tied together with bolts 30,31).
Regarding claim 2, wherein a travel limiter (axle of the wheel 41, as shown in figure 3, the axle stops travel of the elongated member, see figures 3 and 5) is formed of a limiting member positioned at a lower end of the elongated housing that contacts the elongated member and limits travel of the elongated member within the elongated housing.
Regarding claim 3, wherein the elongated housing is open (see the u-shaped opening to receive the axle of the wheel in figure 5) on a side of the elongated housing.
Regarding claim 4, wherein the elongated housing (11) is open on a side of the elongated housing, wherein the open side of the elongated housing is adjacent to the side of the elongated member (10) on which the rollers are mounted (see figure 5).
Regarding claim 5, wherein the first side of the elongated housing (11) and the second side of the elongated housing are on opposite sides of the elongated member (see figures 5 and 6).
Regarding claim 6, wherein the rollers are wheels (see figure 2) each having a center axle (bolt shown going through the center of the roller/wheel, see figure 2) and the wheels rotate around the center axle.
Regarding claim 8, wherein the elongated housing (11) is closed on all vertical sides of the elongated housing –{{ one can say that the elongated housing is closed on the sides/edges, due to it not having holes or apertures, see figure 1}}--.
Regarding claim 9, a suspension member for a vehicle wheel, comprising: an elongated housing (11), a biasing member (20), an elongated member (10) that slidably engages the elongated housing, the elongated member comprising a first plurality of rollers (12) positioned on a side of the elongated member (see figure 5) and a second plurality of rollers (12) positioned on the side of the elongated member (see figure 5) wherein the first plurality of rollers engage a first side of the elongated housing and the second plurality of rollers engage a second side of the elongated housing (see figures 1 and 5), and further comprising a biasing member, wherein the elongated housing is urged away from the elongated member by the biasing member (see Col. 2, lines 30-42 as the elongated housing 11, the biasing member 20 and the elongated member 10 are all tied together with bolts 30,31).
Regarding claim 10, wherein a travel limiter (axle of the wheel 41, as shown in figure 3, the axle stops travel of the elongated member, see figures 3 and 5) is formed of a limiting member positioned at a lower end of the elongated housing that contacts the elongated member and limits travel of the elongated member within the elongated housing.
Regarding claim 11, wherein the elongated housing is open (see the u-shaped opening to receive the axle of the wheel in figure 5) on a side of the elongated housing.
Regarding claim 12, wherein the elongated housing (11) is open on a side of the elongated housing, wherein the open side of the elongated housing is adjacent to the side of the elongated member (10) on which the rollers are mounted (see figure 5).
Regarding claim 13, wherein the first side of the elongated housing (11) and the second side of the elongated housing are on opposite sides of the elongated member (see figures 5 and 6).
Regarding claim 14, wherein the rollers are wheels (see figure 2) each having a center axle (bolt shown going through the center of the roller/wheel, see figure 2) and the wheels rotate around the center axle.
Regarding claim 16, wherein the elongated housing (11) is closed on all vertical sides of the elongated housing –{{ one can say that the elongated housing is closed on the sides/edges, due to it not having holes or apertures, see figure 1}}--.
Allowable Subject Matter
Claims 7 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7 and 15 have the end of the elongated member that is opposite the biasing member extends out of the housing, wherein, the art of record did not include the elongated member extending out of the housing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marlon A Arce whose telephone number is (571)272-1341. The examiner can normally be reached 8AM - 4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at 571-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARLON A ARCE/Examiner, Art Unit 3611 /VALENTIN NEACSU/Supervisory Patent Examiner, Art Unit 3611